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September 11, 2008

USPTO News: Patent Office Posts Comments on New Appeals Rules

On June 10, 2008, the U.S. Patent and Trademark Office published a notice in the Federal Register setting forth amended rules of practice before the Board of Patent Appeals and Interferences (BPAI) in ex parte appeals (see "New Appeals Rules Published"). What escaped the attention of the patent community at the time, however, was the Patent Office's publication of a notice one day earlier requesting comments from the public on the Office's estimates for additional burdens imposed on applicants by the new appeals rules (see "USPTO Rulemaking Practices Being Called into Question (Again)"). The earlier Federal Register publication had gone unnoticed because the Patent Office had not listed the notice on its website (see the "Federal Register Notices" column on the "News and Notices" page of the USPTO website) or any other forum for notifying the public. This marked a departure from the Office's recent practice of posting such notices on its website. In fact, the Office published a similar notice regarding the alternative claiming rules earlier this year (see "Patent Office Publishes Notice Regarding Impact of Proposed Markush Claims Rules on Small Entities" and "You Can't Fight the USPTO -- or Can You?").

In late July, when David Boundy (at left) of Cantor Fitzgerald alerted us to the June 9th notice, we wondered whether the Office's failure to post the notice on its website evinced an intention to reduce the amount of public participation in the Office of Management and Budget's (OMB) Paperwork Reduction Act (PRA) review of the new appeal rules, or whether the Office had merely dropped the ball. While this question still awaits a satisfactory answer, Mr. Boundy informed us earlier this week that the Patent Office has now posted the comments it received in response to the June 9th notice. The twelve comments (Mr. Boundy's second submission was intended to replace the first) can be found at the Office's "Paperwork Reduction Act" page. (Interestingly, Mr. Boundy noted that instead of being posted in an expected location on the USPTO website -- the "Comments from the Public" page -- the comments were posted on a separate page containing requests for comments to eight recent notices. In view of the Office's June 9th hide-the-ball request for comments, the manner in which these comments were posted is perhaps not entirely surprising.)

Mr. Boundy offered a brief review of the submitted comments (which was helpful, since his own submission runs 206 pages in length). While noting that the comments from Heimlich (comment #9) and Badley (comment #2) were interesting for their empirical data, Mr. Boundy found the comments of Katznelson (comment #11) and Dunne (comment #6) (as well as his own submission) to be interesting because of "their exposition of the methodological flaws and pervasive disregard for the rule of law by the Patent Office." Mr. Boundy has promised to provide a more extensive review of the submitted comments after he has had a chance to review them in more detail.

For now, however, Mr. Boundy notes that "[i]f the PTO acquiesces to following the law, its only two options are to either (a) withdraw the Appeal Rule and simply let it die, or (b) withdraw the December 12 effective date for the Appeal Rule, and proceed . . . with a new Notice of Proposed Rulemaking and a concurrent submission to OMB under the Paperwork Reduction Act," since 5 C.F.R. § 1320.11 requires that the Administrative Procedure Act (APA) notice and comment period and the PRA 60-day comment period be essentially concurrent. Having little faith that the Office will choose one of the above options, Mr. Boundy instead expects the Patent Office "to continue its pattern of the last two years of improvising procedure as it goes along . . . and ignoring any law it finds inconvenient," and therefore, he predicts that "the PTO will pretend that all preliminary steps were timely completed and approved, and will pretend that it can submit the Appeal Rule to OMB for a 30-day review."

Mr. Boundy believes that it is important that the Patent Office not be allowed to ignore Executive Office regulations by doing this, and has asked interested members of the patent community to pay attention to the Office's Federal Register notices over the next few weeks to see if the Office issues any follow-on announcement regarding the PRA review of the new appeal rules. If the Office decides to bypass such regulations, Mr. Boundy recommends that those in the patent community contact Susan Dudley, the head of the Office of Information and Regulatory Affairs at the OMB; David Rostker, the Desk Officer for the Department of Commerce; and the OMB official to be named in any future USPTO notice, to request that the OMB deny the Patent Office's request for paperwork approval, and "compel the PTO to simply follow the law like every other agency." Patent Docs will provide additional information on this issue, if (or when) the Patent Office takes the path predicted by Mr. Boundy.

Comments

Thamks for posting this. I admire Dave Boundy's and Ron Katznelson's diligence and perseverance in pointing out how flawed, lawless, and irresponsible the current USPTO hierarchy is in the Rule making process. The Appeal Rules are just the tip of this iceberg. The "rule of law" needs to prevail here or we're in for serious trouble. And I no longer give the USPTO hierarchy any benefit of the doubt as to whether failure to follow the appropriate procedures was intentional or not, given the USPTO hierarchy's past track record.

David is a great asset to the patet bar. He is relentless. Whenever I feel that the PTO's war of attrition against applicants and practitioners may be succeeding, I just go back and read his comments on the PTO green paper (regarding restriction practice). They are a classic and make me laugh and inspire me to continue the fight.

It always amazes me how only a few people take the laboring oar in matters of widespread outrage. David Boundy is the unsung hero of the U.S. patent system. David works tireless to expose the fallacies behind many of the purportedly "quality enhancing measures" which the USPTO continues to spout at an ever increasing rate. We all owe him our gratitude.